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Santa's Got A Brand New Brand

Toronto’s Yorkdale Shopping Centre (“Yorkdale”) has forever changed the way we will visualize Santa Claus. Paul Mason, aka “Hot Santa”, was hired by Yorkdale to portray a modern Santa Claus. Through the gift of social media, Hot Santa went viral, with many oogling over the transformation of how we view Santa Claus. And, Paul Mason received instant stardom.

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This year, Yorkdale was not successful in re-hiring Paul Mason for the role of Santa Claus, so hired an equally handsome and modern Santa Claus, Adam Martin.

Now, Yorkdale Shopping Centre and Paul Mason are fighting over the ‘Fashion Santa’ brand that both parties took part in making a success.

A question I never thought I would ask: who has the legal rights to the “Fashion Santa”?

Both parties have filed for trademarks to ‘Fashion Santa’, and Hot Santa started registering the copyright for Fashion Santa long before he was featured at Yorkdale Shopping Centre. However there are other legal issues that need to be taken into consideration, including:

  • Whether an employment/consulting agreement was entered into between Yorkdale and ‘Fashion Santa’ and who retained ownership of the brand;
  • The similarities between the ‘Fashion Santa’ character and the new Yorkdale character.

The latter will be a complex issue, since both parties have applied for trademark registration of ‘Fashion Santa’. Since Yorkdale filed their trademark application first, it is likely that they will get priority for the trademark.

This is not the first time a character has been disputed between an employer/company and the person actually playing the character. Recently, Stephen Colbert reincarnated his famous Colbert character from The Colbert Report on his new night show.

He publicly stated his limitations due to copyright, but instead introduced his old character’s ‘twin’.

Including the following sort of clause can help protect an employer from having a person hired to play a character from taking the character with him:

“The employee/consultant understands that all proprietary information and work product is the property of the company. In addition, the employee/consultant hereby agrees to assign to the company, without further consideration, all existing and future rights that the employee/consultant may presently have or may acquire, free and clear of all liens and encumbrances, in and to the proprietary information and work product, which shall be the sole property of the company, whether or not it is registrable intellectual property.”

The contract drafter can also define ‘proprietary information’ and ‘work product’ based on the specific circumstances the contract is being drafted for. This will help to create greater certainty.

You never know what idea is going to attract instant fame, so it is always a good idea to protect yourself with the right legal document. Make sure Santa Claus has the right clause!

 

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This article is provided for informational purposes only and does not create a lawyer-client relationship with the reader. It is not legal advice and should not be regarded as such. Any reliance on the information is solely at the reader’s own risk. Clausehound.com is a legal tool geared towards entrepreneurs, early-stage businesses and small businesses alike to help draft legal documents to make businesses more productive. Clausehound offers a $10 per month DIY Legal Library which hosts tens of thousands of legal clauses, contracts, articles, lawyer commentaries and instructional videos. Find Clausehound.com where you see this logo.

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A business deal gone Nashty: basketball legend files for gyms to stop using his name and image

Have you ever heard of Steve Nash? Sound familiar? That’s because we all know him as one of Canada’s finest, a basketball player from Victoria, B.C. who made it big in the mid-’00s playing for the Phoenix Suns. The NBA legend was an eight-time All-Star and retired last year with plenty of celebrity leftover, and now that fame is the subject of a recent court case.

Nash has been in the news for filing a civil claim against some of his former business partners from a past business venture related to gyms. He wants his name and face removed from the front of Steve Nash Fitness World & Sports Club. Back in 2007, Nash helped open the chain that is now 21 gyms strong, but sold off his shares in 2014. He hasn’t received compensation for the continued use of his brand since, and is now seeking a ban and damages.  

Source

The issue might have arisen in relation to trouble with one business partner in particular, that being Mark Mastrov. In 2013, Mastrov bought into partial ownership of the Sacramento Kings. At the same time, Nash was still playing with the Los Angeles Lakers. The NBA has strict rules its members and associates must follow, and one of those is that team owners and players are not supposed to be involved in business with one another. To prevent a conflict of interest because of Mastrov’s move, Nash exited the business arrangement (one that was supposed to have lasted until 2022) by quickly selling his shares.

Since the case is a new one, it has yet to be considered by the courts. One point that the court will most likely consider is how to treat Nash’s celebrity status. What sort of intellectual property rights does Nash have to the representation of his own person? Does Nash even have a case to preserve and protect his person?

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music2020 / Flickr

Fortunately for him, there is a wealth of Canadian case law on the matter of what can be termed “appropriation of personality.” In Athans v. Canadian Adventure Camps Ltd. (1977) (ONSC), plaintiff George Athans Jr., a renowned professional skier, sought an injunction and damages because a picture of him skiing was reused without his permission on the front of a camp brochure. While his particular claim of injunction was deemed unwarranted because the reproduction was not particularly recognizable as him, it was determined that people do have exclusive proprietary rights towards their image and personality.

 

The circumstances during which proprietary rights to personality can be violated were later clarified and better defined in the case of Gould Estate v. Stoddart Publishing Co. (1999) (ONSC). This case disputed the publishing of a book of photographs and conversational excerpts from 1956 between famed classical pianist Glenn Gould and journalist Jock Carroll. Gould’s estate had not consented, nor received any royalties. A distinction was made about “sales vs. subject” here, and is described as follows: “Sales, where the identity of the celebrity is used, constitute commercial exploitation and invoke the tort. In contrast, where the celebrity is the actual subject of the work and the work is an attempt to provide some insights about the celebrity, the work does not invoke the tort.” As a result, the estate’s case was dismissed.

Applying this principle to Nash’s case, he may stand a chance to get the outcome he wants. The use of his name and image has a commercial bent, quite like the example the judge used in the Gould reasoning of Elvis merchandise. The gym chain is not like the book on Gould, meant to offer the public a way to learn about Steve Nash himself.

“Fitness World & Sports Club” sounds pretty underwhelming on its own, so if this case goes in favor of Nash they better be on the scramble to re-brand!

To see standard terms of use and site-user agreements, visit our Small Business Law Library!

 

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This article is provided for informational purposes only and does not create a lawyer-client relationship with the reader. It is not legal advice and should not be regarded as such. Any reliance on the information is solely at the reader’s own risk. Clausehound.com is a legal tool geared towards entrepreneurs, early-stage businesses and small businesses alike to help draft legal documents to make businesses more productive. Clausehound offers a $10 per month DIY Legal Library which hosts tens of thousands of legal clauses, contracts, articles, lawyer commentaries and instructional videos. Find Clausehound.com where you see this logo.

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Innovative Companies Need Well Drafted IP Protection

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Recent developments in the field of robotics and highlight the difficulty of balancing the need for a free market to foster innovation and growth with the need to protect legitimate companies from “patent trolls” and patent privateers in the United States. The article calls on Congress to protect innovative companies from attacks by patent privateers, who divert energy from innovation.

In the United States, patent litigation boutiques are big business. Innovative companies, such as those in the robotics industry, often generate 100’s of patent applications each year. This leaves such companies vulnerable to “patent trolls”, businesses in the business of litigating patent claims. When faced with the expense of such a fight, companies often settle, thus draining resources away from the innovation which enables the company to flourish. It is important that all IP be adequately protected, whether through well drafted patent claims, or well drafted licensing and IP transfer agreements.

Read the article here.

Take away:

  • Investing in well drafted IP protection allows companies to focus on their business, instead of draining resources from innovation to litigation.

 

Are you a Startup Company looking for discounted legal services? Check out our partnership with Black Letter Law lawyers here!

 

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This article is provided for informational purposes only and does not create a lawyer-client relationship with the reader. It is not legal advice and should not be regarded as such. Any reliance on the information is solely at the reader’s own risk. Clausehound.com is a legal tool geared towards entrepreneurs, early-stage businesses and small businesses alike to help draft legal documents to make businesses more productive. Clausehound offers a $10 per month DIY Legal Library which hosts tens of thousands of legal clauses, contracts, articles, lawyer commentaries and instructional videos. Find Clausehound.com where you see this logo.

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Answer All the Questions About Ownership of IP Before Collaborating with a University

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The hugely successful corporation, Google, was a spin off from research done for a PhD. thesis at Stanford, which makes looking at university research an attractive option. But if your business is considering working with IP that originates from a university, there are many questions to ask.

What role has the university played? Was it the incubator, the advisor, the developer? Will the start up be a spin off? Who owns the IP? What type of licensing will be put in place? Who will manage and maintain the patents? Who is responsible for indemnification in case of third party IP infringement suits? Will nondisclosure and non-compete agreements be put in place? The answers to these questions should establish a relationship that will justly reward both parties for their contributions, and encourage innovation and business success.

Read the article here.

Take away:

  • When collaborating with university researchers, be sure to understand who will own/license the background IP…along with the foreground, sideground and postground IP.

 

Are you a Startup Company looking for discounted legal services? Check out our partnership with Black Letter Law lawyers here!

 

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This article is provided for informational purposes only and does not create a lawyer-client relationship with the reader. It is not legal advice and should not be regarded as such. Any reliance on the information is solely at the reader’s own risk. Clausehound.com is a legal tool geared towards entrepreneurs, early-stage businesses and small businesses alike to help draft legal documents to make businesses more productive. Clausehound offers a $10 per month DIY Legal Library which hosts tens of thousands of legal clauses, contracts, articles, lawyer commentaries and instructional videos. Find Clausehound.com where you see this logo.

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Good Background IP Protection is Not a Luxury in a Difficult Economy.

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The recent economic upheavals in the Chinese economy have had a dramatic global effect on commodity producers. Mining corporations have been especially vulnerable to falling demand. In these economic situations, the impulse is often to look for ways to cut costs, and administrative and legal fees are often among the first to be trimmed. But mining corporations should think twice before neglecting to protect their IP, especially their background IP.

Minerals in the ground are not the only resources that can be developed and sold. Mining companies often have a wealth of unrecognized IP stored in the form of design improvements to equipment, internally developed equipment, and internally generated software. Recognizing and creating inventories of these assets is the first step. Obtaining good legal advice to develop background IP licensing agreements is the second step.

The third step is to market this IP to potential licensees.

Read the article here.

Take away:

  • Protecting your background IP helps to maximize the value of business assets, which is especially important in tough economic times.

 

Are you a Startup Company looking for discounted legal services? Check out our partnership with Black Letter Law lawyers here!

 

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This article is provided for informational purposes only and does not create a lawyer-client relationship with the reader. It is not legal advice and should not be regarded as such. Any reliance on the information is solely at the reader’s own risk. Clausehound.com is a legal tool geared towards entrepreneurs, early-stage businesses and small businesses alike to help draft legal documents to make businesses more productive. Clausehound offers a $10 per month DIY Legal Library which hosts tens of thousands of legal clauses, contracts, articles, lawyer commentaries and instructional videos. Find Clausehound.com where you see this logo.

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Understanding the Nature of the IP is Key to Drafting IP Transfer and Licensing Agreements

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A thorough understanding of the IP involved in a transaction is an essential first step to drafting an IP transfer or licensing agreement. The nature of the IP will determine the issues that need to be addressed, and will assist in determining the appropriate scope of the licence. It will also determine the structure of payment and/or royalty provisions.

Careful attention should be given to the rights the licensee wishes to obtain, and the rights the licensor wishes to retain when drafting the grant of the license. The business objectives and outcomes of both parties will help to determine the scope of the license. Considerations include the use granted, territory, term, exclusivity, revocability, sublicensing, termination etc. When deciding if the licence is to be exclusive, non-exclusive or sole, particular attention should be given to ensure that the language chosen is consistent with applicable statutory definitions, and that the agreement is enforceable according to the intentions of the parties.

Read the article here.

Take away:

  • Before drafting an IP transfer or licensing agreement, the drafter should have a thorough understanding of the nature of the types of IP to be covered by the agreement.

 

Are you a Startup Company looking for discounted legal services? Check out our partnership with Black Letter Law lawyers here!

 

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This article is provided for informational purposes only and does not create a lawyer-client relationship with the reader. It is not legal advice and should not be regarded as such. Any reliance on the information is solely at the reader’s own risk. Clausehound.com is a legal tool geared towards entrepreneurs, early-stage businesses and small businesses alike to help draft legal documents to make businesses more productive. Clausehound offers a $10 per month DIY Legal Library which hosts tens of thousands of legal clauses, contracts, articles, lawyer commentaries and instructional videos. Find Clausehound.com where you see this logo.

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Background IP Licensing Agreements Promote Innovation

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An Australian specialist in cricket helmets wanted to break into the jockey helmet market, but couldn’t quite perfect the manufacturing process. Attempts to manufacture offshore (China) were plagued with difficulties. However, through a networking association, access to university background IP on material properties made it possible to move forward, not just with manufacturing, but with manufacturing domestically, thus avoiding issues of offshore sourcing, including consistency of materials and consistency of manufacturing process.

Innovative startups can benefit from university background IP, while universities can benefit from bringing this IP to market. It is important for both parties that a robust policy and appropriate licensing agreement is developed to both protect background IP and promote its use in industry.

Read the article here.

Take away:

  • Having a policy in place for sharing while protecting background IP, can make/break a startup, can encourage innovation and create new products and markets and economic growth.

 

 

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This article is provided for informational purposes only and does not create a lawyer-client relationship with the reader. It is not legal advice and should not be regarded as such. Any reliance on the information is solely at the reader’s own risk. Clausehound.com is a legal tool geared towards entrepreneurs, early-stage businesses and small businesses alike to help draft legal documents to make businesses more productive. Clausehound offers a $10 per month DIY Legal Library which hosts tens of thousands of legal clauses, contracts, articles, lawyer commentaries and instructional videos. Find Clausehound.com where you see this logo.

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Can a competitor use my trademark on their website for comparative pricing?

Moogsi / Wikipedia

Many websites use numerous brand names to compare pricing of each company’s products. Issues may arise when such ‘price-comparison’ websites are using other companies’ trademark names or designs.

How is a trademark protected?

A trademark is a registered word name or design that is legally owned by a business entity or an individual. An individual or business can register a trademark through a jurisdiction’s intellectual property office. The receipt of approval for a trademark from an intellectual property office, such as the Canadian Intellectual Property Office (CIPO), means that any other third party that tries to use the trademark by either:

(i) displaying it as its own trademark;

(ii) depreciating the value of goodwill attributed with the trademark (s. 22 of the Trademarks Act); or

(iii) providing false or misleading advertising

will be infringing upon the intellectual property of the registered trademark owner.

A website using another company’s trademark word names or design may be liable for intellectual property infringement based on the last two breaches mentioned above.

Depreciating the value of goodwill

A website using a registered trademark in a negative light may be in breach of intellectual property laws which prohibit depreciating the goodwill of a brand. A brand’s goodwill can be decreased by providing negative comparisons to detract customers away from the brand (for example, implying higher prices of a certain brand, or implying that low prices equals low quality).

In Future Shop Ltd. v. A.& B. Sound Ltd. (1994) (BCSC) both parties accused one another of misleading comparative advertising. The BC Supreme Court judge stated comparative pricing strategies that compare similarities between trademarked competition is more likely to contravene s. 22 of the Trademark Act compared to comparative advertising displaying the differences between trademarked competition.

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Walter Lim / Flickr

False and Misleading Advertising

Section 7(a) of the Trademarks Act prohibits any person from making a “false or misleading statement tending to discredit the business, goods or services of a competitor.” Furthermore, Section 52(1) of the Competition Act prohibits a party from “knowingly or recklessly make a representation to the public that is false or misleading in a material respect.” Price comparison companies that use other trademark names or designs must be careful to ensure that they are not misleading customers with respect to the information they provide on behalf of those marks.

Conclusion

Price comparison websites may be permitted to use trademark names or design of a third party company without claiming ownership of the mark, provided that they do not decrease the goodwill of the mark or provide false or misleading advertising of the mark.

To see examples of a variety of standard contracts, visit our Small Business Law Library!

 

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This article is provided for informational purposes only and does not create a lawyer-client relationship with the reader. It is not legal advice and should not be regarded as such. Any reliance on the information is solely at the reader’s own risk. Clausehound.com is a legal tool geared towards entrepreneurs, early-stage businesses and small businesses alike to help draft legal documents to make businesses more productive. Clausehound offers a $10 per month DIY Legal Library which hosts tens of thousands of legal clauses, contracts, articles, lawyer commentaries and instructional videos. Find Clausehound.com where you see this logo.

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